Ex Parte Jacuk et al

Patent Trial and Appeal Board

Sep 29, 2017

13399385 (P.T.A.B. Sep. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/399,385 02/17/2012 Christophe JACUK Q129461 8542
23373 7590 10/03/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
STANIS, TIMOTHY A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/03/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHE JACUK and GERARD PAPET
Appeal 2015-005878
Application 13/399,385
Technology Center 3700
Before ANNETTE R. REIMERS, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christophe Jacuk and Gerard Papet (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a): (1) claims 1,2, 6—9, and 11 as unpatentable over Fontela (US
2009/0008584 Al, pub. Jan. 8, 2009), Dickinson (US 6,737,044 Bl, iss.
May 18, 2004), and Hatke (WO 98/07768, pub. Feb. 26, 1998);1 (2) claims
1 The Examiner asserts that “CA 02264057 ... is [the] English translation of
WO 98/07768.” Final Act. 2. Appellants do not dispute the Examiner’s
assertion. See Appeal Br. 5. We derive our understanding of this reference
from the English translation (i.e., CA 02264057), which is available in the
electronic file wrapper of the underlying application. All references to the
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Application 13/399,385
3—5 as unpatentable over Fontela, Dickinson, Hatke, and Goujon (US
2007/0145081 Al, pub. June 28, 2007); and (3) claim 10 as unpatentable
over Fontela, Dickinson, Hatke, and Tatarka (US 2012/0003410 Al, pub.
Jan. 5, 2012). An Oral Hearing in accordance with 37 C.F.R. § 41.47 was
held on August 9, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a fluid dispenser device.”
Spec. 1:10-11, Figs. 1, 2.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:* 2
1. A fluid dispenser device comprising: a body (100)
that is provided with a dispenser orifice (110); a reservoir (1)
containing fluid and a propellant gas; and a metering valve (20)
that is assembled on said reservoir (1); said reservoir (1) being
movable in said body (100) so as to actuate the metering valve
(20) and dispense a dose of fluid through said dispenser orifice
(110), said metering valve (20) including a valve member (30)
that slides in said metering valve (20) during actuation; said
device further comprising at least one sealing element (40, 41,
42) so as to form a leaktight seal, wherein the at least one sealing
element (40, 41, 42) of said device comprises a cyclic olefin
copolymer elastomer.
text of Hatke are to portions of the translation.
2 Reference numbers added by Appellants.
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ANALYSIS
Obviousness over Fontela, Dickinson, and Hatke
Claims 1, 2, 6—9, and 11
Appellants do not offer arguments in favor of dependent claims 2, 6—
9, and 11 separate from those presented for independent claim 1. Appeal Br.
5—11. We select claim 1 as the representative claim, and claims 2, 6—9, and
11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that (1) “[njowhere does Fontela teach or suggest
the issues associated with a sealing member interacting with the fluid and/or
propellant gas as recognized in the current application”; and (2) “[njowhere.
. . does Hatke even remotely teach or suggest using cyclic olefin copolymer
as a sealing member for a dispenser as claimed.” See Appeal Br. 7—8; see
also Reply Br. 4—5. Appellants acknowledge that Hatke discloses a cyclic
olefin copolymer (COC) elastomer. See Appeal Br. 7—8. However,
according to Appellants, Hatke “does not disclose the use of this specific
material for a valve seal in contact with propellant gas, as claimed.” Reply
Br. 5; see also id. at 4.
As an initial matter, we note that claim 1 recites nothing about the
“sealing element” interacting with the fluid and/or propellant gas or the
valve seal being in contact with the propellant gas. See Appeal Br. 7—8; id.
at 13, Claims App.; Reply Br. 5; In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (Limitations not appearing in the claims cannot be relied upon for
patentability). Although the claims are interpreted in light of the
Specification, limitations from the Specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants elected
to define the claimed subject matter using language that omits limitations
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found in the Specification and we will not now import those limitations into
the claims. The Federal Circuit has “repeatedly held that the fact that the
specification describes only a single embodiment, standing alone, is
insufficient to limit otherwise broad claim language.” Howmedica
Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir.
2008) (emphasis added). In this case, claim 1 merely requires the device’s
“at least one sealing element” to include “a cyclic olefin copolymer
elastomer” and “to form a leaktight seal.” See Appeal Br. 13, Claims App.
Appellants contend that Fontela fails to recognize the problem
addressed by the subject invention. See Appeal Br. 8—9. Namely,
Appellants contend that “nowhere does Fontela recognize the problem of
limiting the damaging interactions between said sealing elements and the
fluid and/or the propellant gas with which the sealing element is in contact.”
Appeal Br. 9; id. at 6 (“Fontela does not recognize the problem of limiting
‘the damaging interaction between said sealing elements and the fluid and/or
the propellant gas with which it is in contact.’” (citing Spec. 3:11—13)).
At the outset, as discussed above, claim 1 does not require the
“sealing element” to be in contact with the fluid and/or the propellant gas
and/or to limit damaging interactions due to such contact. See Appeal Br.
13, Claims App.; In re Self, 671 F.2d at 1348. Moreover, it is well
established that the reason to modify the reference may often prompt a
person of ordinary skill in the art to do what the inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggests the combination to achieve the same advantage or result
discovered by an applicant. In re Kahn, 441 F.3d 977, 987—88 (Fed. Cir.
2006). Additionally, Appellants’ contentions are not responsive to the
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Application 13/399,385
Examiner’s proposed rejection of the combined teachings of Fontela,
Dickinson, and Hatke.
In this case, the Examiner finds that Fontela discloses the device of
claim 1, substantially as claimed, except that “Fontela does not disclose a
body provided with a dispenser orifice in which the reservoir can move and
deliver a dose of fluid through the dispenser orifice.” Final Act. 2—3. The
Examiner relies on Dickinson for disclosing “an inhaler body (Fig. 1, body
9) with a dispenser orifice (Fig. 1, orifice 10) that allows for the movement
of a reservoir similar to that of Fontela in order to produce and deliver a
metered dose of fluid to a user.” Id. at 3. The Examiner concludes that it
would have been obvious “to include with the reservoir of Fontela an inhaler
body and dispenser orifice as taught by Dickenson in order to provide a
structured vessel that allows for the metering and delivery of
pharmacological fluid to a user.” Id. Appellants do not apprise us of error
in these findings of the Examiner. See Appeal Br. 5—11.
The Examiner further finds that “[t]he modified device of Fontela
does not have that the at least one sealing element comprises cyclic olefin
copolymer (COC).” Final Act. 3. The Examiner relies on Hatke for
disclosing “the manufacture and use of cyclic olefin copolymer (COC)
elastomer” (Final Act. 3 citing Hatke 1:2—8), and “numerous advantages of
the properties of the material, including good mechanical properties
(resistance to buckling), low water absorption, good sterilizability, and
excellent barrier action against water vapor” (Final Act. 3 citing Hatke 1:26—
30, 9:26—28). The Examiner also finds that Hatke discloses that “COC
elastomers are particularly suitable for medical technology, including
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containers and components of medical instruments.” Final Act. 3^4 (citing
Hatke 9:28—32.) The Examiner concludes that it would have been obvious
“to make the seal of the modified device of Fontela out of cyclo-olefin
copolymer (COC) elastomer material as taught by Hatke, as the low water
absorption and excellent water vapor barrier action of the COC elastomer
would ensure little evaporation or contamination of the fluid inside the
reservoir.” Final Act. 4. The Examiner’s findings are sound and supported
by a preponderance of the evidence, and the Examiner’s conclusions
therefrom are based on rational underpinnings. Appellants do not provide
persuasive evidence or argument apprising us of Examiner error.
Moreover, in response to Appellants’ argument, the Examiner finds
that “Hatke provides numerous characteristics of COC elastomer,” such as
“high barrier action against water vapor and gases, good sterilizability,
resistance to buckling, low water absorption, use in medical devices exposed
to solutions . . . that would make COC elastomer a prime, obvious candidate
for use as a sealing element within the device of Fontela.” Ans. 10 (citing
Hatke 1:26—30, 9:23—32); see also Ans. 11 (“the disclosed properties of high
barrier action against water vapor, good sterilizability, resistance to
buckling, and low water absorption for COC elastomer as disclosed by
Hatke provides ample reason or motivation to use COC elastomer in place of
the undisclosed sealing material of Fontela.”). Appellants do not provide
persuasive evidence or argument apprising us of Examiner error.
Appellants contend that
the grounds of rejection appear to be that the properties provide
sufficient rational to use COC elastomer for a valve seal.
Applying this reasoning would mean that any existing
elastomeric seal material could be used within a valve containing
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Application 13/399,385
propellant gas, which is obviously not the case nor the proper
standard for an obviousness finding. Moreover, there is
absolutely no reasonable expectation that a material used for
plastic bags and tubing [as in Hatke] will exhibit the same
qualities when used as a sealing member.
Appeal Br. 9.3 As such, Appellants conclude that “one skilled in the art of
Fontela would never have thought to modify the neck gasket of Fontela to be
made out of the COC material disclosed in Hatke.” Id. at 10; see also Reply
Br. 4-5.
Initially, Appellants’ contention regarding the COC material of Hatke
not being “a suitable material for a sealing member” (see Appeal Br. 9-10),
amounts to unsupported attorney argument, and thus, is entitled to little, if
any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight). As discussed above, the Examiner articulates adequate
reasoning based on rational underpinnings to explain why one of ordinary
skill in the art would have been led to combine the teachings of the
references.
Moreover, in response to Appellants’ contention, the Examiner points
out that “[o]ne of ordinary skill in the art would recognize that multiple
characteristics such as chemical compatibility, tensile strength, and low
permeability to fluids and gases are considered when selecting an elastomer
for a sealing element within a fluid dispensor.” Ans. 9—10. The Examiner
asserts that “[tjrying different, known elastomers (like COC elastomer) that
3 We note that Appellants acknowledge that Hatke discloses COC elastomers
for “components of medical instruments.” Reply Br. 5; see also Hatke 9:28-
32; Final Act. 4.
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have the properties of tensile strength and low permeability to fluids and
gases as sealing elements within a fluid dispensing device would have been
obvious, as such attempts would have had a reasonable expectation of
success at providing quality sealing within the device.” Ans. 11; See In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (Absolute predictability that
the substitution will be successful is not required, all that is required is a
reasonable expectation of success.). Appellants do not provide persuasive
evidence or argument apprising us of Examiner error.
The Examiner further takes the position that
it is considered obvious to select materials well-known to be used
in fluid dispensing seals (elastomers) based upon properties that
are considered beneficial to performing the intended function of
sealing within a medical fluid device (i.e. low water absorption,
an excellent barrier against water vapor, resistance to buckling,
good sterilizability, etc). These characterstics [sic.] of COC
elastomer alone are enough to provide motivation for replacing
the seal material of Fontela with COC elastomer. Moreover, the
combination of Fontela and Hatke can be considered a mere
substitution of one know element (an elastomer sealing material
in Fontela) for another known element (the COC elastomer
material as taught by Hatke) to obtain the predictable result of
providing a seal that acts as a barrier between the fluid within the
device and the outside environment while maintaining its
structural integrity.
Ans. 12; SeeKSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); Id. at 417 (“If
a person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”). Appellants do not provide persuasive evidence or
argument apprising us of Examiner error.
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Application 13/399,385
Appellants contend that the Examiner engages in impermissible
hindsight in combining the references. Reply Br. 5.
We are not persuaded. The Examiner cites specific teachings in the
references themselves, not Appellants’ disclosure, in support of the
Examiner’s articulated reasoning for combining the references as proposed
in the rejection. See Final Act. 2-4.
Lastly, Appellants contend that “HFA gases are more aggressive on
seal materials as compared to previously used propellants (e.g., CFCs)” and
that “COC elastomer, which was not previously used as a valve seal when
using CFC as a propellant, would have been considered to be even less
appropriate as a valve seal when using HFA as a propellant.” Appeal Br.
10-11.
Here, the Examiner correctly points out that “claim 1 does not include
the use of HFA propellant within its scope.” Ans. 13; See also Appeal Br.
13, Claims App. We note that claim 8 and claim 11, which depends
therefrom, require the propellant gas to comprise hydrofluoroalkane (HFA)
gases. See Appeal Br. 14, 15, Claims App. Appellants do not present
arguments for claims 8 and 11 separate from those presented for claim 1.
See id. at 11. Moreover, the Examiner relies on Dickinson for disclosure of
HFA gases and concludes that it would have been obvious “to use in the
modified device of Fontela a mixture of HFA-143a and HFA-227 propellant
as taught by Dickenson in order to reduce material aggregation and enhance
the dispersion of particles upon actuation.” Final Act 5; see also Dickinson
2:8—12, 9:54—57. Appellants do not apprise us of Examiner error.
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In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Fontela, Dickinson, and Hatke. Accordingly, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Fontela, Dickinson, and Hatke. We
further sustain the Examiner’s rejection of claims 2, 6—9, and 11, which fall
with claim 1.
Obviousness over Fontela, Dickinson, Hatke, and either Goujon or Tatarka
Claims 3—5 and 10
Appellants do not offer arguments in favor of dependent claims 3—5 or
10 separate from those presented for independent claim 1. Appeal Br. 12;
Reply Br. 3. As discussed above in relation to the rejection over Fontela,
Dickinson, and Hatke, Appellants’ arguments regarding claim 1 are not
persuasive.
Accordingly, for the same reasons discussed above for claim 1, we
likewise sustain the Examiner’s obviousness rejections of claims 3—5 and 10.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 2, 6—9, and
11 as unpatentable over Fontela, Dickinson, and Hatke.
We AFFIRM the Examiner’s decision to reject claims 3—5 as
unpatentable over Fontela, Dickinson, Hatke, and Goujon.
We AFFIRM the Examiner’s decision to reject claim 10 as
unpatentable over Fontela, Dickinson, Hatke, and Tatarka.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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